Comments from Roy H. Hepner

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FROM RESPONDENT 014:
NAME: Roy H. Hepner
COMPANY: Lerner, David, Littenberg, Krumholz & Mentlik
ADDR-1: 600 South Avenue West
CITY, STATE ZIP: Westfield, New Jersey 07090-1497
TELEPHONE: (908) 654-5000
FAX: (908) 654-7866
REPRESENT: self
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QUESTION 01:
Should the PTO require that all Official application related
materials be delivered to a central location? Specifically, what
problems would a requirement that all official application-related
materials be delivered to a central location cause?
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COMMENT ON QUESTION 01:
No comments supplied
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QUESTION 02:
Should the PTO adopt a standard application format? If so, what
portions of the application papers should the PTO require be
submitted in a standard size and/or format, and what sanction
(e.g., surcharge) should be established for the failure to comply
with these requirements?
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COMMENT ON QUESTION 02:
No comments supplied
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QUESTION 03:
If the entire application is not published, what information
concerning the application should be published in the Gazette of
Patent Application Notices?
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COMMENT ON QUESTION 03:
No comments supplied
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QUESTION 04:
Should the patent applicant receive a copy of the published
application -- either published notice and/or application content
at time of publication?
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COMMENT ON QUESTION 04:
No comments supplied
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QUESTION 05:
Should the PTO permit an accelerated examination? If so, under
what conditions?
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COMMENT ON QUESTION 05:
No comments supplied
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QUESTION 06:
Since the cost for publishing applications must be recovered from
fees, how should the cost of publication be allocated among the
various fees, including the possibility of charging a separate
publication fee?
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COMMENT ON QUESTION 06:
No comments supplied
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QUESTION 07:
Should the PTO require an affirmative communication from a patent
applicant indicating that the applicant does not wish the
application to be published, or should failure to timely submit a
publication fee be taken as instruction not to publish the
application? That is, should an application be published unless
the applicant affirmatively indicates that the application is not
to be published, regardless of whether a publication fee has been
submitted? What latitude should the PTO permit for late submission
of a publication fee?
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COMMENT ON QUESTION 07:
No comments supplied
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QUESTION 08:
The delayed filing of either a claim for priority under 35 U.S.C.
119 or 120 may result in the delayed publication of the
application. Should priority or benefit be lost if not made
within a reasonable time after filing? What latitude should the
PTO permit for later claiming of priority or benefit?
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COMMENT ON QUESTION 08:
No comments supplied
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QUESTION 09:
Once the patent has issued, should the paper document containing
information similar to that published in the Gazette of Patent
Application Notice, i.e., the Patent Application Notice, be
removed from the search files, and should publication information
be included on the issued patent?
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COMMENT ON QUESTION 09:
No comments supplied
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QUESTION 10:
After publication, should access to the content of the
application file be limited to the originally filed application
papers? If not, what degree of access should be permilted? Should
access be limited to the content before publication, or should it
extend to materials added after publication?
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COMMENT ON QUESTION 10:
No comments supplied
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QUESTION 11:
11. After publication, should assignment records of a published
application also be made accessible to the public?
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COMMENT ON QUESTION 11:
No comments supplied
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QUESTION 12:
After publication, should access include the deposit of
biological materials as set forth in 37 CFR 1.802 et seq.?
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COMMENT ON QUESTION 12:
No comments supplied
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QUESTION 13:
What types of problems will be encountered if all amendments must
be made by (a) substitute paragraphs and claims, (b) substitute
pages, or (c) replacement of the entire application?
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COMMENT ON QUESTION 13:
No comments supplied
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QUESTION 14:
Should protest procedures be modified to permit the third party
submission of prior art only prior to a specific period after
publication of the application? What action should be taken with
respect to untimely submissions by a third party?
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COMMENT ON QUESTION 14:
No comments supplied
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GENERAL COMMENT:
The purpose of this letter is not to discuss in detail the specific
proposal of publishing pending U.S. patent applications within 18
months of filing. On the contrary, I am writing to respectfully
suggest that the issue of providing access to pending applications
should be considered more broadly. In particular, I am writing to
suggest that the public have access to pending continuation and
divisional applications once the "parent" or any other application
having the same disclosure issues as a patent, or is published in
accordance with the procedures that are now being considered by the
Office.
Much has been written about how the GATT implementation
legislation will provide protection against "submarine" patents,
i.e., those which are kept pending (through continuations, appeals,
etc.) for many years, only to be "sprung" upon the public long after
an industry has developed a comfort level that there are no
troublesome patents. I agree that this is a problem, and I agree that
the 20-year-from-filing term will help remedy this. However, there
are somewhat different yet (in my opinion) more common. and
pernicious aspects of the "submarine" problem. Perhaps an example
will help explain my concerns. I am confident that any attorney
regularly involved in patent litigation has come across this type of
situation.
Party A files a straightforward application for a patent on
a given product. A patent issues to Party A with claims of reasonable
scope. Party B comes along and wishes to sell a competing product. It
reviews Party A's patent and its prosecution history, and comes up
with a safe and clean way to design around the patent. Accordingly,
Party B releases its competitive product. Up to now, the system is
working precisely as it should.
But unbeknownst to Party B, before Party A obtained its
patent, it filed a continuation application. In fact, Party A did so
without any particular plan for seeking additional or different
claims, but solely to preserve the ability to do what I am about to
describe. In particular, Party A examines Party B's competing product
(which clearly avoids the first patent) and submits new claims in its
continuation application by picking and choosing elements which the
specification and Party B's product have in common and which--most
importantly--cover Party B's product. Oftentimes, it is debatable
whether the new claims have "written description" support in the
specification; but that is often of little moment, since examiners
are rarely critical about this issue, and once the continuation
issues, it will be clothed with a presumption of validity, and the
written description issue can only be attacked under the "clear and
convincing" standard.
In any event, Party A receives its continuation patent, and
Party B has now been checkmated. Unfortunately, under today's law,
there is virtually nothing which Party B could have done to prevent
this. Since Party A's continuation application is kept confidential
under 35 U.S.C. 122~ there is simply no way Party B
could have known that this problem was developing.
There are very few disincentives against Party A's
following this procedure; and in highly competitive situations, cost
is not one of them. Typically, the continuation application is filed
at the last moment, and is simply identical to the original
application, with the same original claims. Since there will normally
be a period of at least a few months before the Office would examine
the continuation, there is no real need to submit new claims at the
outset. If the need for new claims never materializes, the
continuation can be allowed to go abandoned, and it is unlikely that
anyone will ever know that it was filed.
In my opinion, the problems created in scenarios like the
one I just described can be and should be removed by making the files
of continuing applications open to the public when at least one
patent having the same disclosure has already issued; or the
application has been published. As I understand the purpose of
Section 122, it is to protect inventions that may constitute trade
secrets unless and until the Office determines that the applicant is
entitled to a patent, and the applicant decides that the claim
coverage that will be granted justifies paying the issue fee and
allowing the patent to issue. However, once one patent issues (or
once one application is published) disclosing the specification, the
raison d'Ítre for keeping the application confidential evaporates;
or at least it should.
There is precedent for what I am proposing in the context
of reissue applications. For quite some time, reissue application
files have been open to the public in accordance with 37 C.F.R. s.
1.11(b). I assume the rationale for this exception to Section 122 is
that the subject matter of the patent has already been disclosed, and
the only thing that is happening in the Office is that the patentee
is attempting to rectify "errors" in the patent--typically by
obtaining broader claims. In fact, this is precisely what goes on in
the scenario I described above--except that it is vastly easier to
file a continuation rather than go through a reissue. With a
continuation, one need not bother to prove the existence of "error".
Indeed, if one keeps continuations going long enough, he or she can
seek broader claims more than two years after the parent issues, and
can argue that there is no express statutory authority preventing
this. And on top of all that, seeking broader claims can be done in
secret; if it doesn't work-out. no one will be any the wiser.
In my scenario described above, if continuing applications
files are open to the public, the dynamics will change considerably.
Party A can still seek further claim coverage if it is considered to
be justified. Party B can at least determine if Party A has
additional applications pending, and can make its own judgment as to
whether Party A should or will obtain the additional claims it is
seeking. In some instances, Party A may even benefit from Party B
learning about additional applications and perhaps choosing to keep
its distance. In all events, the playing field will be leveled at
least insofar as having relevant information is concerned
Accordingly, in the context of the Office's consideration
of publishing patent applications 18 months after filing, I would
respectfully urge the Office to give serious consideration to this
related proposal of having all continuing applications open to the
public, so long as the parent application has issued or been
published.